Piolin Productions, Inc. v.
Claim Number: FA1002001306690
Complainant is Piolin Productions, Inc. (“Complainant”), represented by Matthew
A. Stratton of Harvey Siskind LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <elshowdepiolin.com>, registered with Compana, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 4, 2010; the National Arbitration Forum received a hard copy of the Complaint February 5, 2010.
On February 6, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <elshowdepiolin.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC verified that Respondent is bound by the Compana, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 18, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2010, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@elshowdepiolin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <elshowdepiolin.com>, is confusingly similar to Complainant’s PIOLÍN mark.
2. Respondent has no rights to or legitimate interests in the <elshowdepiolin.com> domain name.
3. Respondent registered and used the <elshowdepiolin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Piolín is the nickname of radio personality Eduardo “Piolín” Sotelo, host of the nationally-syndicated Spanish-language radio show “Piolín por la Mañana.” Complainant, Piolin Productions, Inc., holds common law rights in the PIOLÍN mark dating back to 1989.
Respondent, Texas International Property Associates - NA NA, registered the <elshowdepiolin.com> domain name March 19, 2005. Respondent’s disputed domain name resolves to a page displaying various links to websites related to radio and Complainant’s competitors, as well as other miscellaneous unrelated links.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Policy ¶ 4(a)(i) does not require a
trademark registration with the USPTO if Complainant can establish common law
rights in the mark. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy
¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant asserts common law rights in the PIOLÍN mark because
it is a personal name that has continuously been used in
Complainant argues that
Respondent’s <elshowdepiolin.com>
domain name is confusingly similar to Complainant’s PIOLÍN mark pursuant to
Policy ¶ 4(a)(i).
Respondent’s disputed domain name incorporates Complainant’s mark in
full, adds the generic phrase “el show de” (or, translated into English, “the
show of”) before Complainant’s mark, removes the accent mark from the “I,” and appends
the generic top-level domain “.com.” The
Panel finds that addition of these generic words “el show de” fails to
distinguish the disputed domain name from Complainant’s mark. Two of the words added in the disputed domain
name are an article and a preposition, which are disregarded for purposes of
distinguishing a disputed domain name from Complainant’s mark. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum
May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the
domain names fails to make them separate and distinct, as distinguishable from
Complainant’s marks.”). The third word
added to Complainant’s mark, “show,” is a generic term descriptive of Complainant’s
business activities and its addition does not prevent confusing
similarity. See, e.g., Arthur Guinness Son & Co. (
Certain symbols such as accent marks are not permitted in domain names and Respondent’s omission of the accent mark in the disputed domain name is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. See Florentine Caffe, Inc. v. Pfeffer, FA 465152 (Nat. Arb. Forum June 3, 2005) (finding that “[t]he removal of the accent is insignificant under the Policy because it is not possible to reproduce such punctuation in a domain name”). Similarly, a gTLD is a required element in domain names and also fails to distinguish the disputed domain name from Complainant’s mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that the <elshowdepiolin.com> disputed domain name is confusingly similar to Complainant’s PIOLÍN mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden of proof shifts to Respondent to demonstrate that Respondent has rights and interests in the disputed domain name, pursuant to Policy ¶ 4(c). The Panel finds that Complainant established a prima facie case in these proceedings. Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fung Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel finds that the WHOIS information for the disputed domain name lists the registrant as “Texas International Property Associates,” which demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel finds that such use by Respondent of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website
containing links to third-party websites, some of which compete with
Complainant. Additionally, some of the
links on Respondent’s webpage resolve to websites that could be damaging to the
image Complainant has tried to promote of itself. Using the disputed domain name to operate
such a website clearly disrupts Complainant’s business as Internet users
seeking Complainant may be diverted to other websites or may be confused or
put-off by Complainant’s perceived affiliation with some of the material
advertised on Respondent’s website. The
Panel finds that this disruption of business shows bad faith registration and
use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Respondent’s addition of three generic terms to Complainant’s mark—terms which together create a phrase descriptive of Complainant’s business—is calculated to attract unwary Internet users seeking Complainant. When the Internet users are diverted to Respondent’s website, and click on any of the links listed there, Respondent presumably receives financial compensation on a “pay-per-click” basis. The Panel finds that Respondent’s efforts to mislead Internet users and divert those seeking Complainant’s business in order to receive commercial gain constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elshowdepiolin.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 31, 2010
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